35 U.S.C. § 102(b) Archives

Breaking New Grounds to Limits of IPR Estoppel

by Amol Parikh | May 15, 2025 | Patents

In a matter of first impression, the US Court of Appeals for the Federal Circuit found that inter partes review (IPR) estoppel does not preclude a petitioner from relying on the same patents and printed publications as evidence in asserting a ground that could not have been raised during the IPR proceeding, such as that the claimed invention was known or used by others, on sale, or in public use. Ingenico Inc. v. IOENGINE, LLC, Case No. 23-1367 (Fed. Cir. May 7, 2025) (Dyk, Prost, Hughes, JJ.)

IOENGINE owns patents directed to a portable device, such as a USB thumb drive, that includes a processor that causes communications to be sent to a network server in response to user interaction with an interface on a terminal. Ingenico filed a declaratory judgment action against IOENGINE after one of Ingenico’s customers was sued for infringement based on Ingenico’s products. Ingenico filed IPR petitions challenging the asserted patents, which resulted in final written decisions that held most of the challenged claims unpatentable.

Back at the district court, IOENGINE proceeded with the remaining claims. At summary judgment, IOENGINE moved, under 35 U.S.C. § 315(e)(2), to preclude Ingenico from relying on “documentation related to DiskOnKey Upgrade software,” arguing that Ingenico reasonably could have been expected to raise that prior art during the IPR proceedings. The district court ruled that “Ingenico will be estopped from relying on those documents [to prove invalidity] except to the extent . . . that they form part of a substantively different combination of references that could not reasonably have been raised in the IPRs.”

At trial, Ingenico introduced evidence of a prior art USB device known as the DiskOnKey. The DiskOnKey device was offered with various software applications, including an application called Firmware Upgrader, and was equipped with capabilities described in a Software Development Kit (together, the DiskOnKey system). Ingenico argued that the DiskOnKey system invalidated the asserted claims as anticipated or obvious because it was either “on sale” or “in public use” under 35 U.S.C. § 102(b), or “known or used by others . . . before the date of the invention” under 35 U.S.C. § 102(a). The jury returned a verdict finding the patents were infringed but invalid as anticipated and obvious. Both parties appealed.

IOENGINE did not dispute the jury’s finding that the DiskOnKey system invalidated the claims-at-issue as anticipated or obvious if the DiskOnKey system was prior art, but instead argued that the jury’s finding that the Firmware Upgrader portion of the DiskOnKey system was either “on sale” or “in public use,” or “known or used by others . . . before the invention.”

The Federal Circuit found that the jury’s finding that the Firmware Upgrader was accessible to the public was supported by substantial evidence. Specifically, Ingenico had introduced a press release promoting the launch of the Firmware Upgrader and a website from which the Firmware Upgrader was available for download. IOENGINE argued that this evidence did not show actual use, but the Court rejected [...]

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Neck or Nothing? “Quotation” Invalidates On-Sale Bar

by Keval Amin | Dec 19, 2024 | America Invents Act, Patents

The US Court of Appeals for the Federal Circuit found the patents at issue invalid based on the patent owner’s “quotation” letter to a third party, concluding it was a commercial offer for sale under pre-America Invents Act (AIA) 35 U.S.C. § 102(b) notwithstanding the patent owner’s reservation of a post-quote acceptance. Crown Packaging Technology, Inc. v. Belvac Production Machinery, Inc., Case Nos. 22-2299; -2300 (Fed. Cir. Dec. 10, 2024) (Dyk, Hughes, Cunningham, JJ.)

Crown Packaging Technology owns patents for necking machines, which reduce the top diameter of metal beverage cans. The earliest priority date for the patents was April 24, 2008, setting the critical date of April 24, 2007. On November 14, 2006, Crown sent Complete Packaging Machinery a letter quoting one of its necking machines that embodied the claims of its patents.

Crown sued Belvac Production Machinery for infringing Crown’s patents. Belvac raised an invalidity defense under § 102(b), contending that Crown’s pre-critical-date letter to Complete Packaging constituted a commercial offer for sale, which rendered the patents invalid. On summary judgment, Crown argued that its letter could not create a binding contract, was not a commercial offer for sale, and was not an offer for sale “in this country” as required by § 102(b). The district court agreed with Crown, finding that the letter was merely an invitation to make an offer, not an offer in itself. At trial, the jury found the patents valid but not infringed. Both parties appealed.

The Federal Circuit reversed the district court’s validity determination, finding that Crown’s letter was an invalidating offer for sale under § 102(b). The Court’s analysis involved five factors:

Whether the subject of the offer embodied the claims of the patents.
Whether the offer occurred “in this country.”
Whether the offer predated the critical date.
Whether the invention was the subject of a commercial offer for sale.
Whether the invention was ready for patenting.

Crown conceded that the necking machine embodied the asserted patent claims, was ready for patenting, and that the letter predated the critical date. Thus, the dispute focused on whether the letter was a commercial offer for sale and whether it was made “in this country.”

The Federal Circuit determined that the letter was a commercial offer for sale. While labeled as a “quotation,” the letter included definite terms typically associated with a binding offer, such as pricing, delivery schedules, payment terms, warranties, and liability conditions. These terms established the mutual obligations of the parties. The Court found that the letter required immediate performance since Complete Packaging was obligated to pay 50% of the purchase price upfront and Crown committed to begin manufacturing upon receipt of payment. Also, despite an explicit clause requiring Crown’s written acceptance, the Court found that the letter was still a commercial offer for sale under established legal precedent.

The Federal Circuit also rejected Crown’s argument that the letter was not made “in this country.” Pre-AIA § 102(b) defines an offer made to a US company at its US [...]

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No First Place Trophy Here: Public Demo at Trade Show Found Invalidating

by Amol Parikh | Feb 23, 2023 | America Invents Act, Patents

Addressing the public use bar of pre-America-Invents-Act (AIA) 35 U.S.C. § 102(b), the US Court of Appeals for the Federal Circuit affirmed a district court’s decision to invalidate a patent because the patent owner’s disclosure of a prior art device at a trade show more than one year before the patent’s priority date was an invalidating prior public use. Minerva Surgical, Inc. v. Hologic, Inc., Case No. 21-2246 (Fed. Cir. Feb. 15, 2023) (Prost, Reyna, Stoll, JJ.)

Minerva sued Hologic for infringement of a patent directed to surgical devices for a procedure called endometrial ablation, which stops or reduces abnormal uterine bleeding. The patent had a priority date of November 7, 2011, and the asserted claim included the term “the inner and outer elements have substantially dissimilar material properties” (SDMP term). The district court construed the SDMP term to mean that the “inner and outer frame elements have different thickness and different composition.”

On completion of discovery, Hologic moved for summary judgment of invalidity, arguing that the asserted patent claims were anticipated under the public use bar of pre-AIA § 102(b). According to Hologic, more than a year before the patent’s priority date, Minerva brought a device called Aurora to the 38th Global Congress of Minimally Invasive Gynecology sponsored by the American Association of Gynecologic Laparoscopists (AAGL 2009)—an event dubbed the “Super Bowl of the industry.” During the AAGL 2009 conference, Minerva had a booth with 15 fully functional Aurora devices, gave a presentation discussing the Aurora devices and distributed brochures. In light of the record, the district court granted summary judgment that the asserted claims were anticipated under the public use bar. Minerva appealed.

Minerva raised three arguments on appeal. First, Minerva argued that disclosure of the Aurora device at AAGL 2009 was not a “public use” because Minerva “merely displayed” the device. Second, Minerva argued that there was no disclosure of the “invention” of the asserted claim because the Aurora device disclosed at AAGL 2009 lacked the SDMP term. Third, Minerva argued that the invention was not “ready for patenting” because Minerva was still improving the SDMP technology at the time of AAGL 2009, so the device did not function for its intended purpose of ablating “live human” tissue. The Federal Circuit addressed each argument in turn.

The Federal Circuit found that the district court had correctly determined that the Aurora device at AAGL 2009 was a “public use” since it was shown to individuals other than the inventor under no limitation, restriction or obligation of confidentiality. The undisputed record showed that Minerva pitched the Aurora device to various sophisticated industry members, who were allowed, without confidentiality obligations, to scrutinize the Aurora device closely enough to recognize and understand the SDMP technology Minerva later sought to patent.

The Federal Circuit also concluded that the Aurora device disclosed the SDMP term. The Court found that the inventors conceived of the SDMP technology before AAGL 2009 and that documentation about the Aurora device from before and shortly after the event [...]

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